The Complainant is Scania CV Aktiebolag of Södertälje, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Meisam Gholamshahi of Tehran, the Islamic Republic of Iran.
The disputed domain name <alimascania.ir> (the "Domain Name") is registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2014. The same day, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 16, 2014, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on December 17, 2014.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. On January 7, 2015, the Complainant filed a request for suspension of the proceedings. The Center sent a formal notification of suspension the same day. The Parties were unable to come to a settlement, and on February 6, 2015 the Complainant requested reinstitution of the proceedings. On February 11, 2015, the Center sent a formal notification of reinstitution of the proceedings, extending the due date for Response to February 16, 2015. The Respondent did not file a Response. On February 18, 2015, the Center notified the Respondent's default.
The Center appointed David Taylor as the sole panelist in this matter on March 4, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant, a Swedish joint stock company founded in 1891 (registered as a Swedish company in 1962), is a leading manufacturer of heavy trucks and buses, as well as engines and services in connection with the same. The Complainant operates in over 100 countries throughout the world, including in the Islamic Republic of Iran.
The Complainant is the owner of numerous trademark registrations in the term SCANIA around the world, including but not limited to the following:
- Iranian Trademark No. 11 977, registered on 15 March 1964 (renewed on 1974, 1984, 1994, 2004, 2014) (class 12);
- Iranian Trademark No. 30433, registered on 8 November 1967 (renewed on 1977, 1987, 1997 and 2007) (class 7); and
- Community Trademark No. 002896215, registered on 22 January 2004 (classes 7, 12, 36, 37, 39).
The Complainant also owns domain names consisting of the SCANIA trademark under over 150 different Top Level Domains (TLDs) worldwide, including <scania.com> and <scania.ir>.
The Domain Name was registered on July 23, 2014.
It was pointing at the time of filing of the Complaint to a website offering spare part products for sale, including the Complainant's products as well as products of the Complainant's competitors (although the website was taken down shortly after the Complaint was filed).
The Complainant asserts that the trademark SCANIA is well-known and has acquired considerable reputation and recognition internationally in the heavy vehicles industry, and that prior panels under the Uniform Domain Name Dispute Resolution Policy ("UDRP") have acknowledged this (for instance, Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169 ("The Panel accepts that SCANIA is a well-known mark in the motor industry")).
The Complainant contends that the Domain Name is confusingly similar to the Complainant's SCANIA trademark as the addition of the prefix "alima", which appears to be a common name in the Islamic Republic of Iran, does not have any impact on the overall impression of the dominant part of the Domain Name, SCANIA, which is instantly recognizable as a famous trademark.
The Complainant asserts that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent does not have any registered trademarks or trade names corresponding to the Domain Name and that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. Furthermore, the Complainant asserts that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, as the Respondent does not meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant contends that the Domain Name is pointing to a website prominently displaying the Complainant's logo and offering spare parts for sale, which relate to the Complainant as well as to some of its competitors. In addition, the Complainant contends that the Respondent is not adequately disclosing on the website the relationship, or lack thereof, with the Complainant and is therefore seeking to give the false impression that the Domain Name is connected to the Complainant, most likely in an attempt to trade on the Complainant's goodwill and renown.
The Complainant asserts that the Domain Name was registered or is being used in bad faith. The Complainant contends that the Respondent registered the Domain Name without the Complainant's authorisation and in full knowledge of the well-known status worldwide of the Complainant's SCANIA trademark in respect of heavy vehicles and industrial engines.
The Complainant further contends that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website, as the Domain Name is pointing to a website offering spare part products for sale, including the products related to the Complainant as well as those of its competitors.
Finally, the Complainant asserts that it sent a cease and desist letter to the Respondent on November 17, 2014 and that the Respondent never replied, which is relevant in a finding of bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the irDRP provides that to obtain the transfer of the Domain Name, the Complainant must prove that each of the following elements is present:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the .irDRP, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").1
Taking the aforementioned provisions into consideration, the Panel finds as follows:
Paragraph 4(a)(i) of the irDRP requires the Panel to consider first whether the Complainant has established rights in the term SCANIA. The Complainant has provided evidence of its trademark registrations in the term SCANIA and so the Panel is satisfied that the Complainant has established trademark rights in the term SCANIA.
The Panel is also required under paragraph 4(a)(i) of the irDRP to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Panel notes that the Domain Name incorporates the Complainant's SCANIA trademark in its entirety. Furthermore, the addition of the common or generic term "alima" is insufficient to avoid a finding of confusing similarity with the Complainant's trade mark (see paragraph 1.9 of the WIPO Overview 2.0).
It is widely accepted that the .ir country code Top-Level Domain ("ccTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel thus finds that the Complainant has satisfied paragraph 4(a)(i) of the irDRP.
Paragraph 4(c) of the irDRP sets out the following list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Whilst the burden of proof rests with the complainant, it is often difficult for a complainant to prove a negative. It has therefore become generally accepted that a complainant must first show a prima facie case that a respondent lacks rights or legitimate interests in the domain name, and then the burden of production shifts to the respondent. See paragraph 2.1 of the WIPO Overview 2.0.
The Panel has considered the statements and the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent is not making a bona fide offering of goods or services, in accordance with Oki Data Americas, Inc. v. ASD, Inc., supra, which is the leading case on domain name disputes amongst resellers and trademark holders. To be "bona fide", according to Oki Data, the offering must meet, at a minimum, the following requirements:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the website to sell only the trademarked goods;
(iii) the website must accurately disclose the registrant's relationship with the trademark owner;
(iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the present case, the Panel finds that the Respondent has failed to meet at least the second and third requirements. The Respondent is offering not only the Complainant's trademarked goods but also products of the Complainant's competitors (as shown by the screen captures of the website associated with the Domain Name) and is thus engaging in the practice of "bait and switch" which is clearly not legitimate. In addition, the website associated with the Domain Name does not contain a disclaimer or any other indication accurately disclosing the relationship (or lack thereof) with the Complainant and so Internet users visiting the website will likely believe that it has been authorised or sponsored by the Complainant, when in fact the Complainant has stated that this is not the case. Based on the foregoing alone, the Respondent's offering cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the irDRP.
Furthermore, the Complainant has stated that it has not authorised the Respondent to make any use of its SCANIA trademark, in a domain name or otherwise, and there is no evidence suggesting that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the irDRP.
Finally, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, within the meaning of paragraph 4(c)(iii) of the irDRP, for the reasons described above.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name, in accordance with paragraph 4(a)(ii) of the irDRP.
Paragraph 4(b) of the irDRP sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Panel is of the view that the Respondent registered the Domain Name in bad faith. The Complainant has put forward ample evidence showing that SCANIA is a well-known trademark in the heavy machinery industry and that it is has acquired considerable goodwill and reputation throughout the world, including in the Islamic Republic of Iran, where the Respondent is based. See, for instance, Scania CV AB v. Leif Westlye, supra ("The Panel accepts that SCANIA is a well-known mark in the motor industry") and Scania CV AB (Publ) v. Hydro-Moto-Technika, Nina Lewandowska, WIPO Case No. D2009-1211. The Panel therefore agrees with the Complainant that the Respondent was likely aware of the Complainant's rights at the time of registration of the Domain Name, and thus registered it seeking to unduly profit from the Complainant's considerable goodwill and reputation. The Panel also notes that the Respondent's subsequent use of the Domain Name to point to a website prominently displaying the Complainant's logo and offering for sale the Complainant's products confirms this.
The Panel also finds that the Respondent's use of the Domain Name is in bad faith as the Domain Name is pointing to a website offering for sale not only the Complainant's products but also products that are in direct competition with those of the Complainant. The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, within the meaning of paragraph 4(b)(iv) of the irDRP.
The Panel also finds that the Respondent's failure to respond to the Complainant's cease and desist letter is an additional indication of the Respondent's bad faith.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the irDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the irDRP and 15 of the Rules, the Panel orders that the disputed domain name <alimascania.ir> be transferred to the Complainant.
David Taylor
Sole Panelist
Date: March 18, 2015
1 While this decision is being rendered under the Policy and not the UDRP, given the textual similarities between the two policies the Panel considers UDRP precedent and the WIPO Overview 2.0 relevant to this proceeding.